Posts Tagged: "inter partes review"

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a Patent Trial and Appeal Board (PTAB) ruling that claims of DexCom, Inc.’s patent for implantable glucose sensors were unpatentable as obvious. The CAFC opinion was authored by Judge Nina Y. Wang of the United States District Court for the District of Colorado, sitting by designation.

Back in April, IPWatchdog Founder and CEO Gene Quinn interviewed me on his podcast, IPWatchdog Unleashed, where we discussed 10 things U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart could do to fix the Patent Trial and Appeal Board (PTAB) with the stroke of a pen. Gene summarized those suggestions here. Admirably, Acting Director Stewart had already been busy with reforms, and some of the suggestions I made have since come to pass. This article identifies those and follows up on suggestions still to be adopted. Here are the 10 suggestions, with the current status of each.

Today, the U.S. Court of Appeals for the Federal Circuit issued a ruling in American Science and Engineering, Inc. v. Stewart vacating a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated several of American Science and Engineering’s (AS&E) patent claims covering inspection systems using pencil-beam radiation sources. The appellate court faulted the PTAB for not properly articulating how the asserted prior art’s scatter detectors can detect radiation from the claimed pencil-beam configuration.

In the latest development on U.S. Patent and Trademark Office (USPTO) Director Coke Morgan Stewart’s “settled expectations” doctrine, Stewart today denied iRhythm Technologies, Inc.’s request for Director Review of her own decision to discretionarily deny institution of iRhythm’s petitions for inter partes review challenging a number of patents owned by Welch Allyn, Inc.

In the latest slew of Director Discretionary Denial decisions issued last week by the U.S. Patent and Trademark Office (USPTO), Acting USPTO Director Coke Morgan Stewart largely delivered wins for patent owners, denying or partially denying institution on dozens of inter partes review (IPR) petitions. In one representative case, Stewart extended her increasingly important “settled expectations” doctrine to a patent that has been in force for only six years.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed a district court’s finding that Netflix, Inc. had proven the challenged claims of CA, Inc.’s patent for distributed computing technology obvious. The opinion was authored by U.S. District Judge Jennifer Hall of the U.S. District Court for the District of Delaware, sitting by designation.

In a recently-issued Director Discretionary Denial decision, U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart denied institution of two petitions for inter partes review (IPR) brought by Amgen, Inc. against Bristol-Myers Squibb Company (BMS) but allowed institution in a third IPR. The IPR petitions were brought by Amgen to challenge claims of three BMS patents: U.S. Patent 9,856,320; U.S. Patent 10,174,113; and U.S. Patent 11,332,529. The ‘320 patent  covers a method of administering immunotherapy to a patient; the ‘113 patent covers a method of treating a melanoma; and the ‘529 patent covers a method of treating colorectal cancer. The patents relate to BMS’s popular cancer drug, Opdivo.

Xerox today lost an appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) against Snap, Inc., Meta and X Corp over the Patent Trial and Appeal Board’s (PTAB’s) invalidation of Xerox’s patent on techniques for content delivery. Xerox’s U.S. Patent No. 8,489,599 is titled “Context and Activity-Driven Content Delivery and Interaction” and is directed to “techniques and systems for creating and presenting content based on contextual information.” Snap, Meta and X each filed inter partes review (IPR) petitions challenging claims of the patent based on different prior art. The PTAB instituted all of the petitions and then consolidated them and issued one final written decision determining that the petitioners had collectively established unpatentability.

Several amici have weighed in this week on a petition challenging the U.S. Patent and Trademark Office’s (USPTO’s) recission of former USPTO Director Kathi Vidal’s guidance on discretionary denial—and retroactive application of the new, interim guidance—which SAP America, Inc. argues violated its right to due process. SAP filed a petition for a writ of mandamus with the U.S. Court of Appeals for the Federal Circuit (CAFC) in June seeking to compel the USPTO “to apply its June 21, 2022, ‘binding agency guidance’ to SAP’s petitions, and all still-active petitions filed before February 28, 2025, and to not pressure SAP or any IPR petitioner into forfeiting in parallel district court litigation an invalidity ground it could not have reasonably asserted in their IPR petition.”

On Monday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc. dismissing cardiovascular health company Shockwave Medical’s appeal arguing that the Patent Trial and Appeal Board (PTAB) erroneously relied on applicant admitted prior art (AAPA) in finding its patent claims obvious. The Federal Circuit found the PTAB’s ruling consistent with its own case law on AAPA, which provided general background knowledge for a person of ordinary skill in the art without serving as the sole basis for the PTAB’s obviousness finding.

On Thursday, July 3, iRhythm Technologies, Inc. filed a petition for Director Review of Acting Director Coke Morgan Stewart’s June 6 Director Discretionary Denial decision denying institution of five inter partes reviews (IPR) it brought against Welch Allyn, Inc., claiming Stewart’s decision has “unsettled the IP community.” In the June 6 decision, Stewart denied institution of five IPRs brought by iRhythm against Welch Allyn, finding that, while several factors weighed against denial, the failure of the petitioner to challenge the patent sooner and the “settled expectations” of the patent owner superseded those factors.

On Monday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in Eye Therapies, LLC v. Slayback Pharma, LLC, vacating an obviousness ruling by the Patent Trial and Appeal Board (PTAB) that invalidated Eye Therapies’ patent claims to methods of treating eye redness. Reviewing the relevant patent prosecution history at the U.S. Patent and Trademark Office (USPTO), the Federal Circuit found that the Board’s validity ruling was ultimately infected by an erroneous construction of the transitional phrase “consisting essentially of” in light of intrinsic evidence supporting a narrow interpretation for that disputed claim term.

The Patent Trial and Appeal Board (PTAB) on Thursday designated as informative a Director Review decision in which Acting Director Coke Morgan Stewart said the Board abused its discretion by instituting two petitions for inter partes review (IPR) challenging the same claims. According to the U.S. Patent and Trademark Office (USPTO), informative decisions provide the Board “norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases .”

In a Director Discretionary Denial decision issued today by Acting Director of the U.S. Patent and Trademark Office (USPTO) Coke Morgan Stewart, Procomm International PTE Ltd.’s request to discretionarily deny three petitions for inter partes review (IPR) brought by Ericsson and Verizon Wireless was granted, in part because one of the patents at issue was dismissed from the parallel litigation.

Every experienced patent attorney knows what is written below is true, but if you want the quiet parts to be spoken loudly, keep reading. This article isn’t revolutionary, but it screams a truth that everyone with an interest in patents needs to understand. Patent invalidation rates by the Patent Trial and Appeal Board (PTAB) are often used to attack the quality of examination by the U.S. Patent and Trademark Office (USPTO). While I agree that there is room for improvement in examination quality, patent invalidation rates should not be used as a barometer for how well the USPTO is examining patent applications.